DECISION

Dynamic Sports Construction, Inc. v. Beynon Sports Surfaces, Inc.

Claim Number:  FA0411000366279

PARTIES

Complainant is Dynamic Sports Construction, Inc. (“Complainant”), represented by P. Douglas Barr, of Stoll, Keenon & Park, LLP, 300 West Vine Street, Suite 2100, Lexington, KY 40507-1801.  Respondent is Beynon Sports Surfaces, Inc. (“Respondent”), represented by E. Scott Johnson, of Ober, Kaler, Grimes and Shriver,120 East Baltimore Street, Baltimore, MD 21202-1643.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <martinsurfacinginc.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Richard DiSalle, is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 22, 2004.

On November 21, 2004, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to the National Arbitration Forum that the domain name <martinsurfacinginc.com> is registered with Innerwise, Inc. d/b/a Itsyourdomain.com and that the Respondent is the current registrant of the name.  Innerwise, Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On November 24, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 14, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@martinsurfacinginc.com by e-mail.

A timely Response was received and determined to be complete. 

Additional Submissions of both the Complainant and the Respondent were received and considered by the panel.

Pursuant to Complainant’s request, the Forum appointed Richard DiSalle, as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

DECISION

In Complainant’s Additional Submission, the following appears:  The lynchpin of Respondent’s defense is the allegation that Southwest abandoned the name “Martin Surfacing [Inc.],” and that Respondent, therefore, acted properly in later reviving it and registering it as a domain name resolving to Respondent’s web site.  Specifically, Respondent says that, beginning in 2003, Southwest launched a marketing campaign that shifted the focus of Southwest’s marketing and advertising from its numerous trade names (including “Martin Surfacing”) to one brand name, “SRI Sports.”  Respondent argues that, by instituting its “SRI Sports” branding campaign, Southwest effectively abandoned all of its other marks, including “Martin Surfacing,” so that anyone – including Southwest’s business competitors – was free to claim the abandoned marks as their own.

This action is outside the scope of the UDRP because a key issue (according to the Complainant) is whether Southwest Recreational Industries (“SRI”), Complainant’s predecessor in interest, effectively abandoned the MARTIN SURFACING trademark prior to Complainant’s acquisition of interest in the mark.  See Stevenson Indus., Inc., v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 24, 2002); see also Commercial Publ’g Co. v. EarthComm., Inc. FA 95013 (Nat. Arb. Forum July 20, 2000) (cases where registered domain names are subject to legitimate disputes are relegated to the courts).

Accordingly, it is Ordered that the request for relief be DENIED without prejudice.

Richard DiSalle, Panelist

Dated: January 26, 2005

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2005/90.html